adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulmers Limited, Wm. Magner Limited v. GMA S.r.l. Societa/Ditta

Case No. D2010-1886

1. The Parties

Complainants are Bulmers Limited and Wm. Magner Limited, of Clonmel, Ireland represented by FRKelly of Ireland.

Respondent is GMA S.r.l. Societa/Ditta of Pompei, Italy.

2. The Domain Name and Registrar

The disputed domain name <magnersitalia.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 8, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On November 8, 2010, Tucows Inc. transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2010.

The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on December 13, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant Bulmers Limited owns a number of trademarks incorporating or consisting of the term “magners,” including for example Community Trade Mark number 1,411,594 MAGNERS in Class 33, registered September 4, 2002.

The disputed domain name was registered March 26, 2010 and presently routes to a parking page with the statement, in four languages, “This domain name is reserved.”1

5. Parties’ Contentions

A. Complainants

Complainants primarily style their Complaint under trademark doctrine, but also make summary allegations reciting elements of the Policy.

The Complaint avers that “Magners” is an original and highly popular Irish cider beverage distributed in the United Kingdom, Europe and the United States of America. Complainants aver that Complainant Bulmers Limited owns registered trademark rights in the term “magners,” while Complainant Wm. Magner Limited is a related trading company which has developed substantial good will in the name.

Complainants allege they have various registered trademark rights in the term “magners,” and also describe common law protection that they contend protects the term in the United Kingdom. Complainants also list many domain names based upon the term and allege that Complainants’ trademark rights predate the registration of the disputed domain name. Complainants briefly allege that the disputed domain name is nearly identical and confusingly similar to their trademarks, as required under the Policy.2

With respect to rights or legitimate interests, Complainants allege that Respondent is not known by any name corresponding to the disputed domain name, and that there is no bona fide use of the disputed domain name. Complainants allege that “there is no commercial advantage in setting up such a website other than to sell [the disputed domain name] to the Complainant or to a competitor.” Complainants also contend that they sent a cease and desist letter to Respondent on July 8, 2010 requesting transfer of the disputed domain name, with no response by Respondent.

With respect to bad faith, Complainants summarily allege, among other things, that the disputed domain name was registered primarily for the purpose of selling it to Complainants or a competitor of Complainants for valuable consideration in excess of out-of-pocket expenses of registration; that the disputed domain name registration is disruptive to their business and confusing to customers; that there is no conceivable non-infringing use to which Respondent could put the disputed domain name; and that “Respondent may also be seeking to benefit from click fees when his website is mistakenly opened by a person looking for the complainant’s website.”

On the basis of the above allegations, Complainants request transfer and suggest that for “administrative ease,” the disputed domain name be transferred to Complainant Bulmers Limited.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainants must establish each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Although the disputed domain name is not identical to Complainants’ MAGNERS trademark, the Panel agrees with Complainants and concludes that the disputed domain name is confusingly similar.

The disputed domain name <magnersitalia.com> is made up of the simple combination of the MAGNER trademark and the Italian word for Italy.

Many cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. Gopan P.K.,WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”). Moreover, UDRP panels generally disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. Vat.com,
WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,
WIPO Case No. D2006-1315.

The Panel finds that the addition of the term “italia” to Complainants’ trademark does not alter the confusion with Complainants’ marks that Internet users would experience; it follows that the disputed domain name is confusingly similar to Complainants’ trademarks.

Therefore, the Panel concludes that the Complaint makes the required showing under Policy, paragraph 4(a)(i). 3

B. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(1) the use of the domain name in connection with a bona fide offering of goods and services;

(2) being commonly known by the domain name; or

(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if Complainants make out a prima facie case and Respondent enters no response. See id., (citing De Agostini S.p.A. v. Marco Cialone,
WIPO Case No. DTV2002-0005).

Complainants summarily contend that Respondent does not have legitimate interests because Respondent does not make bona fide use of the disputed domain name and, essentially, that Respondent is not commonly known by the disputed domain name. In the absence of a response by Respondent, the Panel accepts these factual allegations as true.4

The gist of the Complaint is that Respondent registered the disputed domain name for the purpose of profiting from its sale to Complainants or their competitors. In the absence of any reply by Respondent, the Panel is inclined to agree. At the very least, however, it is clear on the record that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and the Panel so finds.

The Panel finds that Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain name.

The Panel rules therefore that Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel also concludes that Respondent has registered and is using the disputed domain names in bad faith, as explained below.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

These circumstances are not exhaustive, however, and panels may draw inferences about bad faith registration and use in light of the circumstances, such as whether the trademarks in question are well known, whether there is no response to the complaint, whether a respondent is making active use of the disputed domain name or whether there is no conceivable legitímate use for the disputed domain name. E.g., Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.

The Panel does not hesitate to find that Respondent knew of Complainants’ MAGNERS mark when Respondent registered the disputed domain name, since the trademark had long been in existence and widely used before registration, in addition to being registered as a Community Trademark. In the words of another panel, “i]t seems [highly] unlikely . . . that Respondent would have chosen this name randomly.” Kahn Lucas Lancaster, Inc. v. Marketing Total S.A.,
WIPO Case No. D2007-1236. The Panel finds, therefore that the disputed domain name was registered in bad faith.

It remains for the Panel to determine whether Respondent, in addition to registering in bad faith, is also using the disputed domain names in bad faith.5 Despite the fact that the record contains little evidence relating to the four illustrative circumstances in paragraph 4(b) of the Policy, the Panel nevertheless concludes that Respondent is also using the domain names in bad faith.

In many decisions involving inactive websites or so-called “passive holding,” UDRP panels have adhered to the approach outlined in Telstra Corporation Limited v. Nuclear Marshmallows, supra. In Telstra, the panel explored the question of which circumstances of inaction, or passive holding, beyond those identified in paragraphs 4(b)(i), (ii) and (iii) of the Policy, constituted use of a domain name in bad faith.

The Telstra panel explained that

“[t]his question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”

Following the approach of Telstra, the Panel finds that circumstances indicating bad faith use in this case include Respondent’s failure to respond both to the Complaint and to Complainant’s cease and desist electronic letter, sent to the registrant’s address listed in the WhoIs record, see, e.g., Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632.

The website to which the disputed domain name routes has also been inactive for over nine months, with no visible preparations for active use by Respondent. With the addition of the word “italia” to Complainants’ MAGNER trademark, the Panel also finds that there is no conceivable good faith use for the disputed domain name <magneritalia.com> by Respondent.

The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith and that the requirements of the third element of paragraph 4(a) of the policy are fulfilled.6

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <magnersitalia.com> be transferred to Complainant Bullmers Limited.

Jeffrey D. SteinhardtSole PanelistDated: December 27, 2010

1 The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves, and by viewing archives at “www.archive.org/index.php”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.

2 Although the Complaint acknowledges the difficulty for Complainants of meeting their burden of proof in the absence of access to more information about Respondent, the Complaint adduces a minimum of evidence going to the elements of Complainants’ case under the Policy. The Complaint relies mostly on trademark laws of the UK and EU. While those laws are relevant to determining whether Complainants possess trademark rights in this proceeding, it would have been more useful to directly present evidence within the framework of the Policy.

3 The record in this case clearly establishes Complainants’ priority of use in the trademark sense, however it is not required under the UDRP for a complainant to have trademark rights that precede the registration of the disputed domain name for purposes of the first element. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Para. 3.1.

4 The record establishes that the website to which the disputed domain name routes is not being actively used, therefore there is no bona fide use.

6 Since the website to which the disputed domain name routes has no active content, it is not clear how Respondent might be benefiting through “click fees” from visitors to Respondent’s website, as alleged by Complainants. In any case, it is unnecessary for the Panel to rule on this allegation in reaching its decision.